March 1, 2005
Via Federal Express
Mr. Will Bryant
58 Sterling Hill Drive
Jacksonville, FL 32225
Via Email
Mr. Josh Winslow
[email protected]
Dear Messers Bryant and Winslow:
We represent The Ohio State University ("OSU") in trademark and domain name infringement matters, and it is has come to our attention that you are infringing upon OSU's intellectual property rights in your use of BUCKEYE PLANET on merchandise and registration and operation of buckeyeplanet.com web-site.
As you no doubt know, OSU has used various famous trademarks for many years in connection with collegiate sporting activities, including, BUCKEYES, SCARLET and GRAY, the famous BLOCK O, OSU, BRUTUS BUCKEYE, GO BUCKS! and others (the "OSU Marks"). OSU has expended considerable effort and resources to build up goodwill in its OSU Marks and licenses them to authorized producers of OSU products. As a result, these marks have become famous and are relied upon by consumers to identify OSU's products and services.
To ensure that consumers can rely on its marks, OSU actively polices use of its marks on non-licensed products and the Internet. In the past we have been very successful in shutting down web-sites, restaurants and clothing vendors who attempted to trade upon the goodwill represented by the OSU Marks and who used OSU imagery, colors and trademarks to create a false impression that OSU had sponsored or otherwise endorsed their products or services, or who used the OSU Marks to get a free ride and unfairly trade off of OSU's reputation.
Your use of BUCKEYE PLANET on clothing, and your registration and use of the domain name buckeyeplanet.com website to sell items replete with OSU trademarks and traditional colors, has been undertaken with full knowledge of OSU's products and services. Your acts not only infringe upon OSU's rights, but are also likely to dilute the distinctiveness of the valuable OSU Marks, and to confuse consumers into believing that they are going to a website authorized by, affiliated with or otherwise connected to OSU, which is false.
Your actions constitute trademark infringement, dilution, unfair competition, passing off and cybersquatting and under United States federal law, 15 U.S.C. §§ 1114 and 1125. These laws provide for a number of remedies, including injunctive relief, monetary relief that includes recovering defendant’s profits and up to three times the damages sustained by the plaintiff, costs of the action, and reasonable attorney fees.
For these reasons, we demand that you immediately cease all sale of any products containing an OSU Mark or imagery or colors that provide the look and feel of OSU Marks, use of the domain name buckeyeplanet.com and any other domain name containing an OSU Mark, as well as revise any subsequent web-site to remove all OSU Marks and imagery that operate to create a false impression that your products or web-site is affiliated with OSU. We also insist that you advise us of the quantity of products bearing the OSU Marks that have been produced, the quantity that have been sold up to this point, and your profits in connection with such sales, and we further demand that you sign an agreement to refrain from selling any products or offering any services that infringe the OSU Marks, or using any mark, domain name or look and feel of a web-site in the future that is confusing similar to those proprietary to OSU.
Please provide us with your written assurance within three (3) days from the date of this letter, that you will comply with all of the terms of this letter.
If you refuse to cooperate, and force us to pursue this matter through legal means, we will seek the maximum penalties imposed by law, as outlined above. We strongly recommend and anticipate your compliance.
Sincerely,
Brian J. Downey
sorry guys